Protecting IP rights in Ukraine
It is also true that the range of available procedures and remedies and their efficiency have a large influence on the actual value of IP assets in a certain jurisdiction. This chapter briefly describes the procedures and remedies for IP protection available in Ukraine.
Litigation
Litigation is most frequently used for the purposes of IP rights protection in Ukraine. The above legal tool has its local peculiarities summarised below.
IP cases are normally considered by the Ukrainian civil or commercial courts; however, in some cases, administrative courts shall also be competent. Cease and desist letters or any other pre-litigation measures are not required to initiate the IP court action. Preliminary injunction is available in IP matters either before initiation of court proceedings or within pending litigation cases.
In the vast majority of IP matters in Ukraine, the claims are filed for: termination of IP infringement; compensation for damages resulting from IP infringement; cancellation of a trademark registration/patent; early termination of a trademark registration on the basis of non-use; recognition of a well-known trademark in Ukraine; patent extension; invalidation of an IP-related agreement; cancellation of an application-related decision of the Ukrainian PTO (such cases should be considered by the administrative court); and termination of unfair competition in the IP domain.
In most IP-related court proceedings an expert opinion is requested. The questions of, inter alia, similarity of trademarks, compliance of a trademark/patent with conditions of registrability/patentability should be considered by specially certified experts, appointed by judge. Three levels of appeals are formally available; however, in fact, only two of them may be effectively used.
Notably, though Ukraine is not a case law jurisdiction, normally the lower courts are guided by jurisprudence of the higher courts in IP matters.
Administrative procedures
In addition to litigation, administrative procedures may be applied to protect IP rights: at the customs border by the State Customs Service of Ukraine; in the sphere of competition by the Antimonopoly Committee of Ukraine; and to well-known marks by the Ukrainian PTO.
To obtain the IP rights protection at the customs border, one should register the IP object with the customs registry. Upon registration, the State Customs Service will suspend customs clearance of goods containing the registered object, unless otherwise agreed by the rights holder.
In the event the IP infringement is confirmed by the court and/or respective expert, the infringing goods should be seized and destroyed. If the IP infringement has not been proved, the IP rights holder should compensate the customs authorities and the importer/exporter.
Under Ukrainian law, only copyright and related rights, trademarks, industrial designs and geographical indications may be registered with the customs authorities. Patents for inventions and utility models may not.
To enjoy IP rights protection from the Antimonopoly Committee of Ukraine, one should file an application for termination of unfair competition. This protection may be provided against trademark, trade name and commercial name infringements. It can result in fines, compensation and seizure of infringing products.
The Ukrainian PTO can protect rights using its special authority to recognise well-known marks. A mark may be recognised as well known by the PTO’s Appellate Chamber as of certain date (usually, in the past) on application. The well-known status of a mark secures much broader legal protection in Ukraine and strengthens the IP rights holder’s standing in other IP proceedings.
Criminal proceedings
Criminal proceedings may be initiated against IP infringement upon the relevant statement of the IP rights holder or by the police/prosecutor itself. A criminal IP infringement must be intentional and cause major damages (the amount of damages is not fixed and depends on subsistence level; currently, this means damages of more than €1,000).
Under Ukrainian law, a legal entity is a civil plaintiff in a criminal case. Moreover, only individuals (or relevant officials of legal entities) may be criminally liable.
Sanctions range from a fine to imprisonment (with seizure of infringing goods and production facilities), depending on the extent of the criminal offence. IP infringement that is not considered criminal may be prosecuted by the police as an administrative offence of IP rights, which may be punished by a fine and the seizure of infringing goods and facilities.
Oleksandr Mamunya is a senior attorney at Vasil Kisil & Partners. He can be contacted at: mamunya@vkp.kiev.ua
